By Keith McDowell
“Hear no evil, see no evil, and speak no evil” is an intriguing credo worthy of consideration in some instances, but also typically an excuse to avoid confronting the obvious truth in situational encounters. Consider, for example, the case for the infallibility of university faculty members; namely, the notion that faculty are always right. How does that aphorism work with respect to the commercialization of technology? The answer, of course, depends on whom you ask.
By all accounts, the process of transforming an idea or research discovery into a viable commercial product or service is a complex one populated with numerous evaluation procedures and decision branches. Not to be too harsh on faculty, but the experience of most technology transfer and commercialization professionals is that faculty members as a general rule are not prepared to undergo such a journey and in some cases willfully subvert the process to their own disadvantage. Why would anyone behave in such a manner and what is the nature of that behavior and their ignorance?
In the interest of addressing these questions while hopefully avoiding some proverbial dime-store psychology, I’ll “speak some evil” and relate my own experience in dealing with faculty members and the process of technology commercialization. Here are some of the issues that I’ve experienced or seen.
· Most faculty members don’t know or understand the process for moving an idea or discovery through the pipeline to commercialization, although this situation has been changing in recent years. Even worse, they fail to understand the technology commercialization jargon and confuse, for example, the meaning and differences between an idea, a discovery, an invention, or a commercial product. But believing themselves in the infallibility of faculty, they refuse to accept their ignorance and pretend otherwise, typically to the detriment of everyone involved.
· Far too many faculty members think they know better than the professionals about how to commercialize their discovery.
· As a general rule, the “slow step” in technology commercialization is not the office of technology commercialization but the faculty member. It’s one of those “see, hear, and speak no evil” moments.
· Most faculty members don’t understand and often refuse to accept that the university owns the intellectual property resulting from an invention disclosure, often as a direct result of the Bayh-Dole Act combined with the contract between the university and the faculty member. To everyone’s credit, such contractual arrangements are now being more fully explained in an up-front manner to all the parties involved, especially given recent court actions. The game of IP walking out the back door continues, but is better understood and being addressed.
· Faculty members refuse to invest the necessary sweat equity into getting the details properly done during the invention disclosure process. They just don’t believe the details are needed for a proper valuation by the university prior to patenting or choosing another branch in the decision tree. And it’s part of a knee-jerk culture primed to always fight against perceived administrivia.
· Faculty members vastly overestimate the potential commercial value of their invention disclosure. I’ve lost track of the number of times I’ve seen estimates ranging into the hundreds of millions of dollars. The presumptive value of such estimates is their power to convince the university to pursue full patent protection and downstream commercialization.
· Some faculty members enjoy invoking the publication conundrum; that is, the perceived conflict between the timing involved in the publication of research and the patenting process. While there are certainly issues to be considered, university technology transfer professionals fully understand them and the entire issue is easily and almost always well managed. This is one of those “much ado about nothing” concerns causing lots of angst and little else.
· Most faculty members significantly underestimate the development process and don’t accept scale-up or manufacturing related concerns as issues. Although a downstream problem, it sometimes affects the early stages, especially the juncture where the university decides to pursue or not pursue an invention disclosure or return full rights to pursue to the faculty member.
· Contrary to folklore and the conventional wisdom of pundits, universities often return the right to pursue an invention disclosure through the commercialization pipeline to the faculty member. And it’s done in a timely manner. Universities don’t sit on such invention disclosures. There are many reasons why universities don’t pursue invention disclosures including the lack of funding to pay for the patent process. No one gains from sitting on potential intellectual property and university administrators understand that proposition.
· Many faculty members don’t appreciate and are confused about the variety of ways to obtain value from their invention disclosure as intellectual property, whether through monetization (“cash on the barrel head” to us old guys), royalties, or the differing kinds of stock options in a startup company as the most obvious examples. It’s a game of managing expectations and working with the faculty member to obtain an optimal strategy for all the participants.
· Faculty members struggle with the issue of becoming personally and directly involved in technology commercialization. Such concerns include becoming an investor, a consultant, an entrepreneur, a research administrator in a startup company, and a host of other possible configurations. Sadly, many faculty members become sucker bait for fast-talking entrepreneurs and venture capitalists. Every technology commercialization professional has their own collection of stories about such episodes, including me. Rescuing people from such foibles is part of the business.
· Faculty members are sometimes confused about the choice between licensing to a startup company versus a mature business. Too often, they see gold at the end of the rainbow in the startup.
Proper valuation and proper decision-making at each stage in the process of technology commercialization is difficult and involves the interplay of people and all that that entails. When correctly done, effective and full communication to and with all parties is an essential factor. And for universities, that begins with a training program before the fact to prepare faculty members for what they will experience. Ignorance of the process must never be an excuse for someone to fall back on the myth of faculty infallibility as a reason to bully or to be truculent.
I’ve often been asked by faculty members the following question: so what do I get from playing the game and working with the university instead of taking my invention out the back door? My answer is simple. You get trained and experienced professionals who know what they are doing and who understand the consequences of all the actions taken. You get lawyers and contacts to entrepreneurs, venture capital, and mainstream industry. And it doesn’t cost you a penny other than the time involved to provide the essential details in your invention disclosure. Best of all, history proves that the financial remuneration that you ultimately receive from your idea and discovery will be maximized when you play the game the right way. While there are some outstanding exceptions that appear to disprove this rule, there are also the many failures that no one knows about aside from the insiders.
Faculty members are not infallible. Neither are technology commercialization professionals. But when both groups work together in common cause and a full understanding of each other, the potential for an innovation to succeed is limitless.
[Image copied from Amazon.com.]